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  • Identifying the Trade Secrets During Litigation

    Contains 3 Component(s) Includes a Live Web Event on 12/17/2019 at 10:30 AM (EST)

    In this IPO Chat Channel session, the panel will discuss considerations underlying trade secret identification for U.S. trade secret litigation. The panel will discuss litigation and legislative trends concerning the timing and scope of the trade secret identification, looking at cases brought under state law as well as under the Defend Trade Secret Act of 2016.

    A central part of any litigation alleging trade secret misuse is identification of the trade secrets claimed to be at issue.  Unlike other areas of intellectual property law where rights are defined by a single document prior to a dispute, trade secrets are often not defined until litigation.  Defining the trade secrets is a challenging issue for the parties and for the courts, who may need to guide discovery into trade secret claims and fashion or approve appropriate relief if misappropriation is shown.  How and when the trade secrets are identified can have a dramatic impact on the progress and outcome of the case.  

    A plaintiff may face competing tensions.  Often the plaintiff may not have full information at the outset of litigation about what trade secrets the defendant appears to have misappropriated or is misappropriating.  The plaintiff may not want to be too specific in defining its trade secrets for fear of overlooking information it is unaware defendant has placed at risk.  However, plaintiffs may also fear that if they are over-expansive in defining their trade secrets, they may reveal information that defendant does not yet know, in which case the litigation itself could expand defendant’s knowledge of the plaintiff’s trade secrets.  Many plaintiffs would rather delay the identification to the later stages of the litigation after learning more about the defendant’s acts.  By contrast, most defendants would like an early definition of the trade secrets with as much specificity as possible so they know how to defend themselves.  The information claimed to be at issue may not qualify to be a trade secret at all, the defendant may never have seen it, or the defendant may have its own trade secrets to protect from intrusive discovery.  

    In this IPO Chat Channel session, the panel will discuss considerations underlying trade secret identification for U.S. trade secret litigation.  The panel will discuss litigation and legislative trends concerning the timing and scope of the trade secret identification, looking at cases brought under state law as well as under the Defend Trade Secret Act of 2016.  

    Speakers:

    Ken Corsello (IBM)

    Victoria Cundiff (Paul Hastings)

    Eric Fues (Finnegan)

    Kenneth Corsello

    IBM

    Ken Corsello is an IP law counsel at IBM. He currently focuses on drafting and negotiating IP licenses and assignment agreements. During his 14 years at IBM, he has worked on patent procurement, litigation, client counseling, product clearance, and IP transactional matters. Before joining IBM, Ken was a law clerk to Chief Judge Glenn Archer at the Federal Circuit; an Associate Solicitor in the USPTO; and in private practice at law firms in Washington, D.C. Ken has been the chair of IPO’s Trade Secrets Committee since 2016. His recent speaking activity on trade secret issues includes testifying in 2018 as a witness on behalf of IPO at a hearing on “Safeguarding Trade Secrets in the United States” held by the U.S. House Committee on the Judiciary, Subcommittee on Courts, Intellectual Property, and the Internet.  

    Victoria Cundiff

    Paul Hastings LLP

    Victoria Cundiff is a partner at Paul Hastings in New York. She is a leader of the Firm’s nationally ranked global trade secrets litigation practice, which is ranked in “Tier 1” by Legal 500. She has been named a “Leading Lawyer” nationally in the field by Legal 500 and has litigated trade secret and related cases throughout the United States and as a member of cross-border teams. She has designed confidential verification protocols for resolving intellectual property use and ownership disputes in and outside of court and advises on lawful competitive intelligence gathering. Vicki is a Visiting Lecturer in Law at Yale Law School, where she teaches intellectual property law, and at the University of Pennsylvania Law School, where she teaches trade secrets law.

    Eric Fues

    Finnegan

    Eric Fues is a partner in Finnegan, Henderson, Farabow, Garrett & Dunner, LLP’s Washington, D.C. office. He represents clients in domestic and international technology disputes, including patent and trade secret litigation at trial and appellate levels. Eric has been involved in more than 50 district court matters and U.S. International Trade Commission (ITC) investigations. Eric’s practice also includes client counseling. He has been recognized by The Legal 500 U.S. for trade secrets work, and by Intellectual Asset Management as a leading patent litigator in the D.C. area and for his ITC practice. Eric previously served as president of the ITC Trial Lawyers Association, and as leader of Finnegan’s chemical and metallurgical practice group. 

  • Patent Case Law Year in Review (RECORDING)

    Contains 3 Component(s)

    This webinar will provide a roundup of this year’s most significant patent cases.

    This webinar will provide a roundup of this year’s most significant patent cases. Over the past year, the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit have authored a number of opinions re-shaping patent law, including Helsinn v. Teva, Return Mail v. US Postal Service, and numerous others involving issues such as UPSTO inter partes review decisions and patent eligibility under 35 U.S.C. § 101. Our panelists, both vice-chairs of IPO's Amicus Brief Committee, will provide key takeaways from these decisions and comment on patent cases to watch in the coming year.


    Speakers:

    Paul Berghoff (McDonnell Boehnen Hulbert Berghoff, LLP)

    Gregory Castanias (Jones Day)

    Moderator:

    Samantha Aguayo (Intellectual Property Owners Association)

    Paul Berghoff

    McDonnell Boehnen Hulbert & Berghoff LLP

    Paul Berghoff, founder of McDonnell Boehnen Hulbtert  Berghoff LLP, has three decades of experience as lead trial counsel in complex patent litigation – both jury and bench trials and PTAB proceedings – concentrating in litigation involving pharmaceuticals, medical devices, biotechnology, electronics, and software. He has successfully tried scores of patent cases and has successfully argued dozens of times before he US Court of Appeals for the Federal Circuit. He services as Chair of the firm’s Litigation & Appeals Practice Group.  He is Vice-Chair of IPO’s Amicus Brief Committee.

    Gregory Castanias

    Jones Day

    Greg Castanias is a partner at Jones Day in Washington, DC. He is head of the firm’s Federal Circuit team and has almost 30 years’ experience as a leading appellate and intellectual property litigator. His experience includes five US Supreme Court arguments, 70+ Federal Circuit arguments, and countless others in federal and state courts across the nation, from Alaska to Connecticut. His intellectual property experience includes such diverse technologies as genetics, diagnostics, pharmaceuticals, chemistry, electronics, and mechanical fields, as well as copyright, trademark, and trade secret disputes. He is Vice-Chair of IPO’s Amicus Brief Committee.

  • Blockchain as an IP Tool (RECORDING)

    Contains 5 Component(s), Includes Credits

    Despite the constant buzz about artificial intelligence, many commentators predict that blockchain will drive the next wave of legal innovation. This webinar will discuss new possibilities for the use of blockchain in the IP arena and the services that are already available from a bevy of start-ups and other providers.

    Despite the constant buzz about artificial intelligence, many commentators predict that blockchain will drive the next wave of legal innovation. This webinar will discuss new possibilities for the use of blockchain in the IP arena and the services that are already available from a bevy of start-ups and other providers.  

    Blockchain is a distributed ledger or database running on multiple devices and open to anyone, where not just information but anything of value can be moved and stored securely and privately. Though products are still in the early stages, blockchain could provide solutions for the IP industry in areas such as: 

    Evidence of creatorship – Individuals and companies could identify their innovation and place it on record within a blockchain. Evidentiary issues around who was the first to create an idea could then be solved through the blockchain’s timestamp.  

    Ownership and assignment -- Blockchain technology could provide clear and accurate ownership records of IP assets. License agreements could even be created and recorded through smart contracts via the blockchain itself, providing an accurate and up-to-date ledger. 

    Anti-Counterfeiting Measures – Blockchain could assist in the authentication and identification of origin in the detection and retrieval of counterfeit, stolen, and parallel-imported goods.  


    Speakers:

    VIncent Fitzsimmons, IPwe

    Maurice Pirio, Perkins Coie

    Dan Staudt, Siemens

    Vincent Fitzsimmons

    IPwe, Inc.

    Vincent Fitzsimmons is the chief operating officer of IPwe. IPwe, which is a participant in IBM’s Blockchain Accelerator, is creating a global patent registry to make patent transactions quicker and cheaper. Vince joined IPWe last year from CPA Global, in the IP Management space, where he spent seven years driving global sales and operations. 

    Maurice Pirio

    Perkins Coie

    Maurice Pirio is a partner at Perkins Coie. A veteran software patent prosecutor and strategist, Maurice has recently focused his practice on blockchain technologies such as bitcoin, distributed ledgers, smart contracts, and machine learning technologies. He has also has successfully handled well over 50 appeals before the PTAB. 

    Dan Staudt (Moderator)

    Siemens Corp.

    Daniel Staudt is Vice President and Chief IP Counsel of the Siemens Corporation IP Department. Dan is responsible for all IP legal matters for the Siemens North American Operating Companies including its digital industries, smart infrastructure, and energy businesses. Dan is vice president of IPO, and a member of its board and executive committee. He has been practicing IP law for almost 30 years. 

  • Patent Eligibility: USPTO's Latest Guidelines for Information Technology (RECORDING)

    Contains 4 Component(s), Includes Credits

    Last month the U.S. Patent and Trademark Office released an update to its January 2019 Subject Matter Eligibility Guidance. Unlike the January Guidance, which represented a significant change in how the USPTO applies § 101 in examination and PTAB proceedings, this update is primarily an effort to clarify issues brought up by public comments on the January Guidance and focuses on clarifying practice for patent examiners.

    Last month the U.S. Patent and Trademark Office released an update to its January 2019 Subject Matter Eligibility Guidance. Unlike the January Guidance, which represented a significant change in how the USPTO applies § 101 in examination and PTAB proceedings, this update is primarily an effort to clarify issues brought up by public comments on the January Guidance and focuses on clarifying practice for patent examiners.

    The panel features a USPTO official, an in-house counsel involved in computer cloud software and services, and a prosecutor specializing in computer and software technologies. The program offers attendees an opportunity to get answers to their questions on the guidance. 

    Each theme in the guidance will be addressed:
    • Evaluating whether a claim recites a judicial exception;
    • The groupings of abstract ideas enumerated in the 2019 PEG;
    • Evaluating whether a judicial exception is integrated into a practical application;
    • The prima facie case and the role of evidence with respect to eligibility rejections; and
    • The application of the 2019 PEG in the patent examining corps.
    Many practitioners find that the majority of § 101 disputes with the USPTO examiners or PTAB turns on whether the claimed invention integrates a judicial exception into a practical application. Our panelists will discuss in detail what help the new guidance does and doesn’t provide in this regard. The private sector panelists also will discuss the practical implications of the gap between USPTO guidance and Federal Circuit case law. 

    Speakers:

    Michael Borella, McDonnell Boehnen Hulbert & Berghoff 

    Matthew Sked, USPTO

    Mark Vallone, IBM

    Michael Borella

    McDonnell Boehnen Hulbert & Berghoff LLP

    Michael Borella is a partner with McDonnell Boehnen Hulbert & Berghoff and serves as chair of its Software & Business Methods Practice Group. Mike has drafted or been involved in the prosecution of hundreds of patents in the U.S., as well as in other jurisdictions. Prior to joining MBHB, Mike served on the management teams of Fastmobile, UTStarcom, and 3Com.

    Matthew Sked

    USPTO

    Matt Sked is a Senior Legal Policy Advisor at the USPTO. He has played a role in the formulation the agency’s patent eligibility guidance for the past 5 years. Earlier he worked as a patent examiner in the electronic arts.  

    Mark Vallone

    IBM

    Mark Vallone is lead IP Counsel for IBM’s Cloud Platform. He is responsible for managing the patent procurement team in support of IBM Cloud, IBM Services, and Global Markets. Earlier he was in private practice and worked as a software engineer at IBM.

  • Inventorship: Lessons from Recent Disputes (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 10/30/2019

    This webinar will look at recent disputes over inventorship to draw lessons for managers of IP and for litigators. Our panel includes a senior patent lawyer at a global pharmaceutical company and two veteran patent prosecutors and IP counselors.

    The America Invents Act eliminated the express requirement that the patent applicant be the inventor. However, the law retains a requirement that all inventors be identified in patent applications. Disputes over inventorship can play out in the USPTO or in district court under a variety of cause of actions.

    This webinar will look at recent disputes over inventorship to draw lessons for managers of IP and for litigators. Our panel includes a senior patent lawyer at a global pharmaceutical company and two veteran patent prosecutors and IP counselors. They will analyze:

    • The pluses and minuses for patent owners and challengers of the USPTO’s new derivation proceeding versus U.S. district court litigation
    • Litigation between employers and inventors, including a Federal Circuit decision illustrating the pitfalls of securing ownership of patent rights through an employment agreement, and another showing how failure to name all inventors may bar patentabilty.
    • The potential disruption caused by failure to carefully monitor R&D collaborations between companies or between corporate and academic collaborators.


    Speakers:

    Manisha Desai, UCB Pharmaceuticals

    Brian Hubbard, Condo Roccia

    Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP

    Manisha Desai

    UCB Pharmaceuticals

    Manisha Desai is Associate General Patent Counsel at UCB Biopharma SPRL, in Brussels.  With 20 years of experience as an in-house patent attorney in the pharmaceutical industry, including many at Eli Lilly and Co., Manisha has worked on patent procurement and enforcement, including U.S. and international patent litigation. Manisha has represented IPO and other industry organizations on IP policy matters during multilateral negotiations at the World Intellectual Property Organization and other UN agencies. Manisha holds a Ph.D. in pharmacology and conducted neuroscience research before her legal career.

    Brian Hubbard

    Condo Roccia

    Brian Hubbard is a partner at Condo Roccia Koptiw. He advises and counsels clients on all aspects of IP, including the development and implementation of patent strategies across diverse technologies and the preparation, prosecution, and portfolio management of patents. He negotiates IP collaboration agreements that allocate and protect rights, and gives practical advice on managing relationships under such agreements. Prior to joining his firm, Brian worked in-house at DuPont for six years, where he was lead IP attorney for a major business. 

    Kevin Noonan

    McDonnell Boehnen Hulbert & Berghoff LLP

    Kevin Noonan is a partner with McDonnell Boehnen Hulbert & Berghoff and serves as chair of its Biotechnology & Pharmaceuticals Practice Group. His practice involves all aspects of patent prosecution, practice before the PTAB, and litigation. He represents pharmaceutical companies both large and small, as well as several universities in both patenting and licensing to outside investors. He has a Ph.D in molecular biology and was a Postdoctoral Fellow at the National Cancer Institute. Kevin is founding author of the popular Patent Docs blog.

  • IP Protection for Data (RECORDING)

    Contains 5 Component(s), Includes Credits

    This webinar will address the different ways that data and databases are protected under U.S. law, including the benefits and disadvantages of different IP frameworks such as copyright and trade secrets, and contrast them with data protection laws outside the U.S.

    Data is now a primary asset for many businesses, used in varied contexts from training artificial intelligence software to better understanding consumers and their preferences. 

    This webinar will address the different ways that data and databases are protected under U.S. law, including the benefits and disadvantages of different IP frameworks such as copyright and trade secrets, and contrast them with data protection laws outside the U.S. The panel will also discuss the use of contracts to protect data and recent court decisions explaining the scope of IP protection for data and databases. The future of data will also be discussed, including the open data movement, in which advocates promote the application of open source software principles to the collection and distribution of data.

    Program attendees will leave with a better understanding of how data is being used to drive American businesses and the strategic choices such businesses face regarding IP protection.  

    Speakers:

    Brian Adams, Qualcomm Technologies, Inc.

    Ken Corsello, IBM Corp.

    Sameer VaderaKilpatrick Townsend & Stockton LLP

    Brian Adams

    Qualcomm Incorporated

    Brian Adams is Associate Patent Counsel at Qualcomm Technologies, Inc. where he currently supports the open source practice and policy team, He has been practicing in the open source legal field since 2012, delivering strategic advice on the Linux Kernel, OpenWrt, and Android. He primarily supports WiFi, Bluetooth, meshnet, IoE and related technologies. Brian is Vice-Chair of the Open Source Committee at IPO.

    Kenneth Corsello

    IBM

    Ken Corsello is an IP law counsel at IBM. He currently focuses on drafting and negotiating IP licenses and assignment agreements. During his 14 years at IBM, he has worked on patent procurement, litigation, client counseling, product clearance, and IP transactional matters. Before joining IBM, Ken was a law clerk to Chief Judge Glenn Archer at the Federal Circuit; an Associate Solicitor in the USPTO; and in private practice at law firms in Washington, D.C. Ken has been the chair of IPO’s Trade Secrets Committee since 2016. His recent speaking activity on trade secret issues includes testifying in 2018 as a witness on behalf of IPO at a hearing on “Safeguarding Trade Secrets in the United States” held by the U.S. House Committee on the Judiciary, Subcommittee on Courts, Intellectual Property, and the Internet.  

    Sameer Vadera

    Kilpatrick, Townsend & Stockton LLP

    Sameer Vadera is a patent attorney who focuses his practice on preparing and prosecuting high-tech patents for industry-leading clients. Mr. Vadera has prepared and prosecuted patent applications directed to a wide range of technologies, including machine learning and artificial intelligence, wireless technologies, blockchain, and network security.

  • Doctrine of Equivalents: Impact of Recent Latest Federal Circuit Decisions on Prosecution and Litigation (RECORDING)

    Contains 4 Component(s), Includes Credits

    This webinar will help practitioners understand the nuances of the Federal Circuit’s recent DOE jurisprudence, as well as give practical tips both on how to build a case for infringement under the DOE and to defend against it.

    In early September, in a brief order, the Federal Circuit announced it was deleting a line it wrote this spring that the doctrine of equivalents (DOE) applies only in cases deemed "exceptional." In a way, the Court was only catching up with two opinions released in August, Eli Lilly & Co. v. Hospira, Inc., and Ajinomoto Co., Inc. v. ITC, that have given hope to patent owners that the DOE is not DOA in a courtroom.

    At the center of the issue is one of the exceptions to the general rule that an amendment to a patent application that narrowed a claim creates a bar to equivalents for that claim limitation. Patent owners may rebut prosecution history estoppel by demonstrating that the rationale for an amendment bore no more than a tangential relation to the equivalent in question The importance of this exception cannot be understated as, when applied, prosecution history estoppel can still have a fearsome bite, as demonstrated in another summer decision of the Federal Circuit, Amgen Inc. v. Coherus Biosciences Inc.   

    This webinar will help practitioners understand the nuances of the Federal Circuit’s recent DOE jurisprudence, as well as give practical tips both on how to build a case for infringement under the DOE and to defend against it. Our panel includes top litigators, including the two that won these cases in August. It also will offer tips for prosecution at the USPTO, particularly regarding how to narrow claims in the least damaging way.

    Speakers:

    John Livingstone, Finnegan

    Sailesh Patel, Schiff Hardin

    Adam Perlman, Williams & Connoly

    John Livingstone

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    John Livingstone is managing partner of the Atlanta office of Finnegan. He is a first-chair trial lawyer focusing on complex pharmaceutical, chemical, and biotechnology patent litigation before U.S. district courts, the ITC, and the PTAB. John was resident in Finnegan’s Tokyo office for four years and frequently helps global clients with U.S. patent issues. He successfully represented Ajinomoto at the ITC and the Federal Circuit. 

    Sailesh Patel

    Schiff Hardin

    Sailesh Patel is a partner at Schiff Hardin. He is co-leader of its IP Group, also co-chairs the firm’s Pharmaceuticals and Biologics Patent Litigation Team, and serves on the firm’s executive committee. He frequently represents generic companies in Hatch-Waxman litigation. He has also represented clients in cases involving wind and solar technology, food processing, automotive components, and software, among other industries.  He has argued several cases at the Federal Circuit that involved the doctrine of equivalents.

    Adam Perlman

    Williams & Connolly LLP

    Adam Perlman is co-chair of the Patent Litigation Practice at Williams and Connolly. He focuses on representing innovator pharmaceutical manufacturers in Hatch-Waxman litigation. He was lead trial counsel for Eli Lilly and Company at three bench trials over the validity and infringement of a Lilly patent protecting its anti-cancer drug Alimta, which has annual U.S. sales of over $1 billion. 

  • Federal Circuit v. USPTO: Chevron Deference? (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 09/19/2019

    Facebook v. Windy City Innovations is the first case at the Federal Circuit centering on deference to the USPTO since the Supreme Court’s recent decision in Kisor v. Wilkie. Even before Kisor, appellants at the Federal Circuit and the Supreme Court had already succeeded in arguing against Chevron deference in such cases as SAS v. Iancu. In the current showdown, the Federal Circuit has invited the USPTO to file a brief saying “what, if any, deference” the Court should give to Precedential Opinion Panel decisions. The USPTO’s brief is due on Sept. 17th, just in time for it to be discussed on the webinar.

    Some commentators would say there is an extraordinary face-off currently playing out between the Federal Circuit and the USPTO on the issue of deference. This was perhaps inevitable after the AIA established the PTAB seven years ago as a venue with broad power to adjudge the validity of issued patents, giving to the USPTO, an administrative agency, rights that previously had been exercised largely by Article lll Courts. 

    Facebook v. Windy City Innovations is the first case at the Federal Circuit centering on deference to the USPTO since the Supreme Court’s recent decision in Kisor v. Wilkie. Even before Kisor, appellants at the Federal Circuit and the Supreme Court had already succeeded in arguing against Chevron deference in such cases as SAS v. Iancu. In the current showdown, the Federal Circuit has invited the USPTO to file a brief saying “what, if any, deference” the Court should give to Precedential Opinion Panel decisions. The USPTO’s brief is due on Sept. 17th, just in time for it to be discussed on the webinar.   
    Our panel, which includes a former chief judge of the Federal Circuit, a former solicitor of the USPTO who is a professor of law, and the litigator who successfully argued SAS at the Supreme Court, will predict how these issues will play out and explore the implications for your practice.

    Our panel, which includes a former chief judge of the Federal Circuit, a former solicitor of the USPTO who is a professor of law, and the litigator who successfully argued SAS at the Supreme Court, will predict how these issues will play out and explore the implications for your practice.

    Speakers:

    Gregory Castanias, Jones Day
    Todd Walters, Buchanan Ingersoll & Rooney PC
    Prof. John Whealan, GW Law 

  • Inherency in Obviousness and Anticipation (RECORDING)

    Contains 6 Component(s), Includes Credits

    This webinar will discuss recent Federal Circuit cases that tackle the difficult subject of inherency, which is often not well understood. It will also draw important lessons for patent prosecution.

    The doctrine of inherency can be a complex one to navigate.  Drawing upon lessons that can be learned from Federal Circuit opinions, this webinar will address how to avoid pitfalls in district court litigation and PTAB proceedings involving inherency, and also provide important tips for patent prosecution. 

    Earlier this year, the Federal Circuit reversed Apple, Inc.'s successful challenge to software developer Personal Web Technologies data processing patent at the PTAB. "The board's reliance on inherency for [an] element in its obviousness analysis was improper," the panel said. The Federal Circuit explained that that the PTAB’s understanding of the prior art might be possible, but ruled that "mere possibility is not enough." 
     
    Other Federal Circuit decisions also provide insights regarding this subject.  Endo Pharmaceuticals Solutions v. Custopharm Inc. held that prior art did not inherently disclose a composition’s vehicle formulation.  In Southwire Co. v. Cerro Wire LLC, the Court explained that “inherency may supply a missing claim limitation in an obviousness analysis” but “the limitation at issue necessarily must be present.”   
     
    The panelists will discuss these cases, and more, and provide their views on the best practices to address inherency issues in patent prosecution and litigation.

    Speakers:

    Mark Feldstein, Finnegan

    Paul Steadman, DLA Piper

    Robert Greene Sterne, Sterne Kessler Goldstein Fox

    Mark Feldstein

    Finnegan

    Mark Feldstein is a partner at Finnegan. He is a patent and trade secret litigator in U.S. district courts and also serves as lead counsel for clients in post-grant trial proceedings at the USPTO. He also maintains an active patent prosecution practice on behalf of domestic and foreign clients.  His practice encompasses issues involving pharmaceuticals, biochemistry, polymers, small molecule chemistry, nanotechnology, optics, and medical and analytic devices.  He holds a Ph.D. in chemistry.

     

    Paul Steadman

    DLA Piper

    Paul Steadman is a trial lawyer and partner at DLA Piper. Paul represents global clients primarily in the automotive, electronics, and heavy industry sectors. He has a long track record litigating patent and trade secret cases, representing clients in Section 337 cases at the International Trade Commission, and arguing appeals to the Federal Circuit. He has represented a number of clients in matters where inherency was a central issue, including Cerro Wire in a successful Federal Circuit appeal. 

    Robert Sterne

    Sterne, Kessler, Goldstein & Fox, PLLC

    Robert Greene Sterne is a founding director of Sterne Kessler Goldstein & Fox. He has been involved in many consequential patent cases, including as co-counsel in KSR International Co. v. Teleflex, Inc. and as successful patent reexamination counsel for i4i in Microsoft Corp. v. i4i.  He was the lead attorney in In re Beauregard, which addressed whether a computer program functionality on a disk was patentable subject matter. His firm has substantial experience in PTAB proceedings. 

  • Recent Developments in China IP (RECORDING)

    Contains 7 Component(s), Includes Credits

    In this webinar you will learn about various changes which have occurred under Chinese law as well as proposed changes which are currently under consideration.

    As China continues its mandated transition from a manufacturing country to an innovation state, China has taken dramatic steps to enhance the mechanisms for both acquisition and enforcement of various intellectual property rights. In this webinar you will learn about various changes which have occurred under Chinese law as well as proposed changes which are currently under consideration. More importantly, you will learn about how many of these changes could impact how foreign entities do business in China and what steps they may take to help navigate the ever changing IP landscape in China.

    The panelists are in house counsel and private practitioners experienced in managing IP assets and/or litigations. Our panel, led by moderator Bob Siminski (Harness, Dickey & Pierce, P.L.C.), will discuss:
    • The current status of the 4th Amendment to the Patent Law, and the areas of changes of particular interest to IPO members
    • Development in the IP court system, including the newly-established national IP appellant court – the IP Tribunal of the Supreme People’s Court.
    • Recent amendments and proposed amendments to the Patent Examination Guidelines
    • Other recent changes and proposed changes in patent invalidity administrative proceedings, the Foreign Investment Law, Special Review and Approval Procedure for Innovative Medical Devices.

    Speakers:

    Hsin Lin, Exxon Mobil Corp.

    Michelle Shen, Medtronic Inc.

    Vivian Zhang, Advance China IP Law Office

    Moderator: 

    Bob Siminski, Harness, Dickey & Pierce